Trademark protection a constant concern for KU

KU licensing dollars

Kansas University and Kansas Athletics split royalties earned from trademark licensed goods each year, usually collecting 10 percent of the wholesale price. Royalties earned in the past five fiscal years:

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It’s not every month that a cease-and-desist letter lands Kansas University in national headlines.

But that’s about how often, on average, one of those letters lands in the mailbox of someone accused of violating KU’s trademarks.

Every day, Kansas Athletics, along with national groups it enlists to help, works to keep people from profiting from the use of KU’s trademarks: “KU,” “Jayhawk,” “Rock Chalk” and more. From T-shirts to bracelets to beanbag games, unlicensed products that use those words threaten KU’s ability to continue to claim those words or phrases as its own — and to take in around $2 million in revenue each year from the sales of products it has licensed to include them.

A cease-and-desist letter from KU attracted a good deal of attention last week from area and nationalmediaoutlets. Perhaps not coincidentally, it concerned a group that operates a Twitter account that shares photos of women’s chests adorned with KU-themed clothing, which KU asked to stop selling merchandise with “KU” on it.

But that’s one of about a dozen such letters Kansas Athletics has sent out over the past year, estimates Paul Vander Tuig, KU’s trademark licensing director. And that’s just a portion of the instances of potential trademark infringement he comes across.

“It can vary from a cease-and-desist letter to me picking up the phone to say, ‘Hey, did you know we own that?’ ” Vander Tuig said.

Always on watch

He works to make sure KU’s trademarks aren’t being used without authorization, and he says it’s a never-ending task.

He relies on a number of different sources who spot potential trademark violations. They include him and other Athletics workers; the Collegiate Licensing Company, which works with KU and about 200 other clients to assist with trademarks and licensing; or an affiliated group that represents universities and professional sports teams; or, sometimes, even alumni or fans who spot something suspicious.

“We’ve got a lot of eyes out there,” Vander Tuig said.

One other pending trademark case for KU, Vander Tuig said, involves a company that sells beanbag-toss games — the kind that dot the streets near Memorial Stadium on KU football game days — alleged to be decorated with artwork that uses trademarks from KU and other schools without authorization. Another recent case involved a group that allegedly sold T-shirts during the NCAA Men’s Basketball Tournament that included the name of KU’s Ben McLemore, which would violate NCAA rules as well as KU’s trademarks.

Trademark-infringing items can show up in the form of hand-made goods on websites like eBay or Etsy, or they can be sold by larger outfits that sell counterfeit goods bearing logos of pro sports teams as well as colleges.

Cease and desist

This is how it is for major universities around the country, said Jim Aronowitz, associate general counsel for the Collegiate Licensing Company. CLC assists KU and other universities, as well as athletic conferences and football bowl games, in protecting their trademarks.

“It keeps us quite busy,” Aronowitz said.

That job has only gotten tougher as the Internet has made it easier for people to sell unauthorized goods.

The cease-and-desist letter is the company’s most frequent tool, Aronowitz said, and that’s generally enough to resolve the problem.

Sometimes, though, it’s not. KU and Kansas Athletics sued downtown Lawrence retailer Joe-College.com for alleged trademark infringement, winning a judgment in 2008 before reaching a settlement after the store closed. In 2010, KU filed a motion to support the University of Alabama in another trademark case in a federal appeals court.

Protect it or lose it

Aronowitz, as well as Kansas Athletics officials, says there’s one big reason the constant trademark vigilance is necessary: If KU, or any trademark holder, doesn’t protect those trademarks, they might fade away.

Indeed, that can happen. It’s a phenomenon called “genericide,” says Andrew Torrance, a KU professor of law who studies intellectual property.

It’s up to trademark holders to make sure their marks aren’t used improperly, Torrance said. If someone uses your trademark without your permission, it’s up to you to put a stop to it. And if you go too long without doing so — especially if there’s a reasonable chance you know it’s going on — there’s no going back.

And if too many people use that trademark, it can lose all the protection it ever had. That’s why “escalator,” once a trademarked brand name, is now considered generic.

“Essentially, you lose your trademark because too many people use it,” Torrance said.

And KU has a powerful incentive to keep that from happening to its trademarks: millions of dollars in royalties from sales of licensed KU merchandise.

KU generally receives 10 percent of the wholesale price of licensed goods sold, which amounts to perhaps 5 percent of the retail cost.

KU’s licensing royalties have risen each of the last three years, hitting $2.3 million for the 2012 fiscal year. The university and the athletics department split that money evenly, after licensing costs are taken out. Those funds go mostly toward athlete scholarships on the athletics side, and on the university side they're split among the KU Memorial Unions, the KU Bookstore at the KU Medical Center and scholarships.

“It’s a lucrative monopoly for KU to protect,” Torrance said.

The meaning of ‘Jayhawk’

So if KU guards vigilantly against trademark infringement, then why is it that when you look at a Lawrence phone book, you can find a list of some 30 or so businesses starting with the word “Jayhawk,” a KU trademark?

There is a Jayhawk bookstore, a dental clinic, a taxi service and more.

Well, many of them may have been in business before the mid-1980s, when KU and other universities first began licensing merchandise and protecting trademarks more seriously.

“In our case, it really has just made sense to, in effect, grandfather those things in,” Vander Tuig said.

Plus, Torrance says, the word “Jayhawk” may be in more of a gray area when trademarks are concerned than, say, “KU.” Its roots are in the term “Jayhawker,” used before the Civil War when KU didn’t yet exist. So one could make a legal case that the word “Jayhawk” in his business name is referring not to KU but to anti-slavery fighters.

That business owner’s case would be hurt, though, if he used a crimson-and-blue Jayhawk logo for his business. And any business that starts up now with “Jayhawk” in its name is likely to get a closer look from KU.

Kansas Athletics and CLC officials say their trademark enforcement protects KU’s brand, saves its fans from inferior products and ensures that proceeds from KU goods go to help the university.

But, when KU’s enforcement efforts start to spill into the news, leaders may have something else to keep in mind: the impression that makes in its fans’ eyes.

“It’s difficult to strike exactly the right balance between protecting your monopoly and alienating your fans and supporters,” Torrance said.

Who gets the money derived from the trademarks...the university or the athletic dept? Who gets the money tells me more about ownership. The mafia owned the casinos in Las Vegas even though the deeds were in other people's names...

If I'm remembering correctly, it all started with that short-stay high-level administrator (female; sister of another female national rising star-a judge?) who changed the KU blue from royal to baby blue, etc.

KU is a joke. They violated Joe College because Perkins wanted to make a point because he had KU money to blow. If he had to use his own money, Joe College would still be open and KU students would be buying cool TShirts. I say bring back Joe College! Mass street needs a cool store and KU needs to focus on teaching kids. Quit being a bully! You set a horrible example, and your football coach can no longer eat ours, or maybe he can. Mangino vs Weis........now that might be interesting.

KU sports is a huge money maker. It's too bad they're making that money on the backs of mostly poor student athletes who will never see a dime of that money. Having an exclusive right to sell something popular like KU logoed gear is a huge money making commodity. That's why I was kind of surprised KU and the city were giving Fritzel the exclusive rights for the parking and concessions at the recreation center. It will be interesting to see how all that plays out.

I don't see how students who have their college tuition, room and board provided for free can say that they "never see a dime of that money." In fact, they see thousands of dollars of that money. If they never advance to the professional ranks, they still have access to a quality education. If they take advantage of that, their benefits will last their lifetime.

Consider all the outlets like playstation and x-box and all the tv stations that use their image to sell products and generate advertising revenue and never pay any royalties or fees to the athletes. The same thing is true of the colleges and universities who benefit greatly from ticket sales, merchandizing, and higher enrollments because of these student athletes. The education aspect is great, but some of these kids are really being exploited by the system. Big name athletes who have their names and images co-opted to sell products after they leave school should be compensated in some way for the use of their name and image in my opinion. But I agree, it would be nice to think the education they received is a fair enough payoff.

Only one word can accurately describe KU and that is; pompous. Pretty pathetic they spend their time haggling and harassing small organizations and businesses who's only intent is to show support for the very organization that is trying to run them into the ground.

Any school, business or organization would be negligent if they didn't protect their trademark property. Any school, business or organization that didn't protect their trademark property really wouldn't be very bright.

I agree with LogicMan about the blue color. However, I would say that the original blue was a little more indigo than royal. The red color is the real travesty. The original color is crimson not the awful tomato red that is being used today. Think back to the traditional (circa 1960 through 1975) yell leaders' indigo sports jackets, white slacks, and crimson vests. Classy. And the pompom girls in their indigo jumpers with the flared mini skirts with crimson lining. Don't even get me started on the band uniforms. Bring back the REAL Crimson and Blue!